The Patent Trial and Appeal Board (PTAB) has recently issued a precedential decision relating to an important but long unresolved issue that commonly arises during depositions in inter partes reviews and similar proceedings before the PTAB. Previously, it was unclear whether and when an expert witness could confer with his or her counsel during the deposition. This uncertainty has led to disputes between the parties and delays of the depositions. According to a decision recently designated as precedential by the PTAB, an expert may confer with counsel after her cross-examination by opposing counsel and before any re-direct examination.
The decision clarifies a portion of the Patent Trial Practice Guide stating that “counsel offering the witness on direct examination shall not . . . [c]onsult or confer with the witness regarding the substance of the witness’ testimony” from the beginning of examination “until cross-examination of the witness has concluded.” The PTAB held that “[t]he prohibition of conferring with the witness … does not exist … during the time frame between conclusion of cross-examination and start of re-cross.” In other words, counsel may confer with their expert on possible further testimony as soon as opposing counsel’s examination of the expert is done.
The decision is significant because of the important role that depositions play in PTAB proceedings: Petitioners and patent owners in inter partes reviews and similar PTAB proceedings may present expert testimony to support their cases. But the only opportunity for a party to cross-examine the opposing expert and thus test his or her opinions is during the deposition. A conference with counsel may help an expert keep his or her testimony on point. As a result of the designation, parties may clearly enjoy the opportunity to prepare an expert for deposition testimony that may mitigate any damaging cross-examination testimony.
Although the decision itself is not new, the PTAB’s recent designation of the decision as precedential means that it now applies to other proceedings. The decision is Focal Therapeutics, Inc. v. Senorax, Inc., IPR2014-00116, Paper 19 (PTAB July 21, 2014).
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